21st Century Innovation Systems for Japan and the United States Lessons from a Decade of Change: Report of a Symposium (2009) / Chapter Skim
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Issues in and Possible Reforms of the U.S. Patent System--Bronwyn H. Hall
Issues in and Possible Reforms of the U.S. Patent System--Bronwyn H. Hall
Pages 138-152
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From page 138... ...
Hall1 Uniersity of California at Berkeley PReFatoRy note This paper was written for the symposium in January 2006, when many were optimistic that a patent reform bill would soon pass in Congress and be signed into law. Because of the delay between the symposium and the publication of the report, the description that it contains of the current state of legislation in this area is inevitably out of date.
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From page 139... ...
. This chart is intended to suggest that in addition to the familiar arguments that patents increase innovation via incentive effects and diffusion and decrease competition because they create temporary monopolies, there are offsetting effects in both cases that have become more apparent in recent years.4 These offsetting 2In particular, see Federal Trade Commission, To Promote Innoation: The Proper Balance of Patent and Competition Law Policy, October 2003; National Research Council, A Patent System for the 21st Century, Washington, D.C.: The National Academies Press, 2004, and the Reply to the National Academies Report by the American Intellectual Property Law Association, 2004.
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From page 140... ...
So far as I know, we are not violating any patent; but really, if we are to be exceedingly earnest in the question, probably we would require to have a highly paid clerk in London continually analysing the various patents; and every year, by the multiplication of patents, this difficulty is becoming more formidable." [R.
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From page 141... ...
Of course in many ways these court decisions were the consequence of legis lative changes in 1982, during which the CAFC was created, and the strengthening of the position of patent holders by a number of procedural changes in the courts. In a comparison of appeals cases from 1953 to 1978 and from 1982 to 1990, the share of District Court decisions finding validity and infringement that were upheld by the higher court increased from 62 percent to 90 percent.
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From page 142... ...
The 1988 Justice Department Antitrust Enforcement Guidelines for International Operations outlined the con sumer benefits from intellectual property licensing and adopted a rule-of-reason approach to such issues. In 1995 the Justice Department and the Federal Trade Commission jointly issued Antitrust Guidelines for the Licensing of Intellectual Property, reiterating the 1988 principles and declaring that "the Agencies do not presume that intellectual property creates market power in the antitrust context" and intellectual property licensing is "generally pro-competitive." Taken together, these changes all add up to a considerable strengthening of patent holder rights and broadening of the reach of the patent system.
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From page 143... ...
Second, there does seem to have been a dilution of the application of the nonobviousness standard in biotechnology (due to court decisions) and some limitations on applying it properly to business method patent applications, in part because of the absence of adequate written prior art documents.
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From page 144... ...
If we are accused of infringe ment by a patent holder who does not make and sell products, or who sells in much smaller volume than we do, our patents do not have sufficient value to the other party to deter a lawsuit or reduce the amount of money demanded by the other company. The first of the problems Barr describes is clearly a case of mutually assured destruction that leaves the firms in question no better off than if they were not accumulating massive numbers of patents for defensive purposes, and yet at the same time is a very costly strategy.
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From page 145... ...
Institutional responses include the National Institutes of Health guidelines encouraging research grantees to facilitate access to patented research tools and the steps taken by several research organizations to place results in the public domain, where they become patent-defeating prior art.
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From page 146... ...
. The substitute bill of Smith and the coalition reform package both change the wording but still try to limit the situations where treble damages can be assessed to cases where notice of infringement has clearly been given by the patent holder.
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From page 147... ...
The substitute bills contain changes intended to increase the take up of inter partes reexamination.
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From page 148... ...
The wording in the bill appears to require injury to the patent holder from absence of an injunction, which sounds like a patent "working" requirement. This requirement is likely to be difficult for universities and public research institutions to meet, and they are therefore opposed to any change in this area.
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From page 149... ...
The House bill expands inter partes re-exam in lieu of the second window. • Publication of all applications at 18 months, House bill contains an exception for those not patenting abroad (18 months or 3 months after 2nd office action)
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From page 150... ...
Also, together with Professor Beth Noveck of New York Law School, the USPTO launched a one-year pilot of a Web-based project on the 18th of June, 2007, entitled Peer-to-Patent, that allows anyone to evaluate software patent applications that have been voluntarily submitted for public evaluation. 14 In July of 2008, this project was deemed successful and the pilot was extended another year, and expanded to class 705 (business method)
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From page 151... ...
Congress, administrative reforms to patent prosecution at the USPTO await court decisions, and two of the more egregious problems with the operation of the system have been dialed back by the Supreme Court. ReFeRenceS Allison, J., and M
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From page 152... ...
2001. "The Effects of Strengthening Patent Rights on Firms Engaged in Cumulative Innovation: Insights from the Semiconductor Industry." In Libecap, Gary, ed., Entrepreneurial Inputs and Outcomes: New Studies of Entrepreneurship in the United States.
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